Wednesday, August 16, 2006

U.S. patent attorneys in the later days of patent application offshoring?

*****According to an article by Douglas S. Malan: As high-tech innovations emerge from Asia and the Middle East, there's a new wave of expansion opportunities for intellectual property firms. Cantor Colburn, for one, is cashing in on the uptick in patent filings. An increased amount of patent prosecution in such fields as nanotechnology, life sciences and alternative energy sources has allowed it to carve its niche as a firm that can handle a large volume of patent analysis, clearance and preparation. "We keep hiring to meet the needs of the workload coming in," said name partner Michael A. Cantor. Now at nearly 70 lawyers, it is among the largest law firms in the state.

With his emphasis on Asia and the Middle East, it was surprising that Malan omitted mention of Cantor Colburn's offshoring / outsourcing of patent application drafting. As in many articles, it's what is NOT mentioned that is MOST interesting.

Of the pricing issue:

"We're doing a little more [discount work] than we have in the past," Linderman noted. "It's a pretty small percentage of our business ... less than five percent."

The current demand for discount pricing is something "that was almost unheard of 10 years ago," around the time McCormick merged with Chapin, Neal & Dempsey in Springfield, Mass., Linderman added.

Cantor Colburn partner Philmore H. Colburn II, however, said he has seen a decrease in the one-size-fits-all approach that sometimes leads to "lower quality patents." Companies, he said "want strong patents that hold up in court. ... A lot of clients realize when they [shop for the lowest price] they might not end up with what they wanted."

Of patent agents:

With the emergence of business in highly specialized industries, Cantor Colburn, he said, has attracted a stable of skilled professionals in various technical arenas that pass a federal examination to become patent agents. Some of these agents -- which at Cantor Colburn bill at a rate of $100-$250 an hour compared to $150-$390 an hour for a patent attorney -- resurrected their careers after layoffs from tech companies. They provide expert analysis of patents while being "heavily involved in backroom goings-on," Cantor noted.

Of solo practitioners:

There's also room for the solo practitioner. Armed with an extensive background in biology and chemistry, Milford attorney Michael James Chang, one year into his career as a solo, is banking on the vitality of the state's pharmaceutical startups to build his practice. Chang, a former associate at Cantor Colburn and the Fairfield, Conn., IP boutique Ryan, Mason & Lewis, also takes on work from independent inventors and small businesses.

Operating as a one-man firm allows him to present competitive prices -- he charges $200 per hour -- and give individual attention that might not always exist in larger firms, he said, adding he has yet to hear negative remarks from prospective clients about practicing on his own.

The real challenge, he said, is something he took for granted at his previous jobs. "It's really just trying to drum up business. When partners are doing that all the time, as an associate you don't appreciate it as much" as when networking alone, he said.

But the work certainly is there for the taking. "The word has gotten out that not only is IP hot, but it's here to stay," Cantor said.

Malan got an important legal fact wrong:

Observers say prosecution growth could be tempered by the Supreme Court's recent decision in KSR International v. Teleflex, a case that might result in tighter laws restricting the number of patent filings based on their obvious comparison to prior patents.

The Supreme Court has not yet heard oral argument in Teleflex, much less issued a decision. Further, any (hypothetical) impact of Teleflex (a case which will address the motivation requirement in obviousness determinations under 35 USC 103) on the number of patent filings is less than clear.

About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.